WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRIMEDIA Magazine Finance Inc. v. Zuccarini
Case No. D2000-1186
1. The Parties
The Complainant is PRIMEDIA Magazine Finance Inc., a Delaware corporation having a place of business in New York City, New York, USA.
The Respondent is John Zuccarini, an individual having a postal address in Andalusia, Pennsylvania, USA.
2. The Domain Names and Registrar
The following three domain names are disputed:
The registrar for each of these domain names is CORE Internet Council of Registrars ("CORE"), Geneva, Switzerland. 1
The domain name "seventeenmagazine.com" is not at issue in this case.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
Complainant initiated the proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on September 7, 2000. A hardcopy of the Complaint was received via courier by WIPO on September 12, 2000. Payment by Complainant of the requisite fees accompanied the courier mailing. On September 26, 2000, WIPO completed its formal filing compliance requirements checklist.
On September 27, 2000, WIPO transmitted to the parties the document entitled, Notification of the Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint. WIPO transmitted these documents to Respondent Zuccarini via post/courier and email. Although WIPOís attempts to fax these documents to Respondent were unsuccessful, there is evidence that WIPO achieved actual notice to Respondent via post/courier and email.
In its Notification, WIPO advised that the response was due by October 16, 2000. WIPO also advised the parties of September 27, 2000, as the date of commencement of this administrative proceeding, pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 4(c).
WIPO received no response from Respondent. On November 1, 2000, WIPO transmitted to the parties a document entitled, Notification of Respondent Default. On November 13, 2000, WIPO advised the parties via email that the undersigned had been appointed as the sole panelist of the Administrative Panel (the "Panel") in this matter. WIPO also advised that, absent exceptional circumstances, the Panel would be required to forward its decision to WIPO by November 26, 2000.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties. The Panel is of the opinion that the Complaint is in compliance with the relevant formal requirements, and that Respondent was properly notified in accordance with the Rules, paragraph 2(a). The proceedings have been conducted in English.
4. Factual Background
Complainant is PRIMEDIA Magazine Finance Inc., a publisher of special-interest magazines targeted to one or more particular audiences. Complainant alleges that it and its predecessors have published a monthly magazine known as SEVENTEEN, since September, 1994.
Complainant has provided evidence that the SEVENTEEN magazine features articles about fashion, beauty, health, careers, relationships and entertainment, and that it is primarily oriented towards the interests of young women.
Complainant alleges that it has hosted an Internet site, "seventeen.com", since 1996. Complainant further has provided evidence that the website promotes the SEVENTEEN magazine generally, and that the website features articles and interactive resources about fashion, beauty, health, careers, sports and entertainment.
Complainant has provided a copy of United States Trademark Reg. No. 411,294, for the stylized letters "seventeen", for a "monthly magazine devoted to the interests of girls." This registration was issued on January 9, 1945. Complainant has also provided a copy of United States Trademark Reg. No. 2,281,763, for "SEVENTEEN", for "computer services, namely providing an on-line computer magazine devoted to the interests of young women." This registration was issued on September 28, 1999, and is for International Class 42.
Network Solutionís WHOIS database query indicates that Respondent John Zuccarini, with a postal address in Andalusia, Pennsylvania, is the registrant of each of the disputed domain names. This database indicates that the record of the registration for "seventeenmagizine.com" was created on October 25, 1999. It further indicates that the records of the registrations for "seventeen-mag.com" and "seventeen-magazine.com" were both created on November 15, 1999.
The Panel has verified that each of the three disputed domain names are presently being used for an advertising referral practice that has become known commonly as "mousetrapping." That is, when a user attempts to visit a website associated with any of the disputed domain names, the user is forced to view multiple "pop-up" windows, displaying advertisements for credit card companies, telephone services, games, music, and other websites. Each of these windows must then be individually closed by the user. Upon closing these windows, the user learns that there is no website associated with any of the disputed domain names. Complainant alleges that Respondent receives fees from advertisers each time a user clicks on any of the "pop-up" advertisements.
The Service Agreement in effect between Respondent and CSL subjects Respondent to COREís dispute settlement policy, which is the Uniform Domain Name Dispute Resolution Policy, as adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration. See Policy, paragraph 4(a). It is not contested that Respondent is properly before this Administrative Panel.
5. Partiesí Contentions
Complainant contends it has strong mark rights in the word "seventeen," and that its mark is famous. Complainant submits as evidence its federal registrations and its statements of long use of the mark. Complainant further submits statements concerning the popularity of its SEVENTEEN magazine and website. Complainant alleges that its SEVENTEEN magazine has a regular monthly readership of nearly 14 million people, and that the magazine generated over $100 million in gross revenue in 1999. Complainant further contends that its website is steadily increasing in popularity, now averaging over 600,000 unique visitors per month. Complainant alleges that it spent more than U.S. $17.3 million to advertise and promote its mark in 1999, and that it is projected to spend more than U.S. $20 million for this purpose in the present year.
Complainant contends that the "relevant portion" of Respondentís domain names "seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagizine.com" is "identical or confusingly similar to Complainantís registered trademark SEVENTEEN in that [the domain names] combine the mark SEVENTEEN with variations on or misspellings of the term magazine, which is allegedly Complainantís primary product sold under the SEVENTEEN mark."
Complainant contends that Respondent should be considered as having no rights or legitimate business interest in the disputed domain names. Complainant submits that Respondent does not own a trademark or service mark registration that is in any way related to either Complainantís SEVENTEEN mark or to any of the disputed domain names. Complainant further submits that its SEVENTEEN mark is not Respondentís personal name, and that Respondent is not engaged in any business or commerce under the mark SEVENTEEN. Complainant states that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use its trademark.
Furthermore, Complainant contends that Respondent does not use the disputed domain names in connection with any bona fide offering of goods or services. Rather, Complainant contends, Respondent uses the "mousetrapping" technique to "misleadingly divert" consumers.
Complainant contends that the disputed domain names should be considered as having been registered in bad faith. In support, Complainant alleges that Respondent registered the disputed domain names with knowledge of Complainantís allegedly well-known mark. According to Complainant, Respondent registered the domain names because of their alleged identity or similarity to Complainantís mark. Complainant further alleges that Respondent registered the domain names for the purpose of diverting Internet users to his website or other on-line locations for commercial gain at the expense of Complainantís trademark.
In further support of its allegation of Respondentís bad faith, Complainant alleges that Respondent has engaged in a larger course of conduct, registering thousands of domain names that are misspellings of famous marks or celebrity names. Complainant cites to a recent legal proceeding in United States District Court, in which Respondent was preliminarily enjoined from using five domain names under the Anticybersquatting Consumer Protection Act. See Shields v. Zuccarini, 89 F.Supp. 2d 634, 400 (E.D. Pa. March 22, 2000) (finding that Respondent had registered thousands of domain names with a bad faith intent to profit and that Respondent "conducts no bona fide business and offers no goods or services that have anything to do with [plaintiffís mark] or with any of the other sites he has registered").
Similarly, Complainant cites to other arbitration awards under the ICANN Policy in which Respondent was found to have registered and used numerous domain names in bad faith. See Encyclopedia Britannica, Inc. v. Zuccarini, WIPO Arbitration and Mediation Ctr., Case No. D2000-0330 (June 7, 2000) ("Taking advantage of consumerís known disposition to misspell domain names, Zuccarini has diverted Internet traffic to his websites, thereby earning substantial revenue from advertisers."); Bama Rags, Inc. v. Zuccarini, National Arbitration Forum, File Nos. FA 003000094380 and 00300009481 (May 8, 2000) ("Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondentís, or other, online locations. . . . A user is led to believe that the Dav[e] Matthews Band sponsors, or is affiliated with Respondentís domain name, and is one and the same (until after a user has suffered going through ten or more Ďpop up boxesí)."); Hewlett-Packard Co. v. Zuccarini, National Arbitration Forum, File No. FA 0004000094454 (May 30, 2000).
Complainant states that it twice sent letters to Respondent, providing notice of Complainantís trademark rights, asserting that Respondentís registrations violated those rights, and requesting that Respondent stop using and transfer to Complainant each of the disputed domain names. Complainant states that Respondent has not replied to either of these letters, and that Complainant has had no communications with Respondent or counsel for Respondent.
Respondent has not submitted any response to Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy institutes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration. These elements are as follows:
(i) respondentís "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights."
(ii) respondent has "no rights or legitimate interests in respect of the domain name;" and
(iii) respondentís "domain name has been registered and is being used in bad faith."
Each of these three elements must be proved by a complainant to obtain relief. Paragraph 4(b) of the Policy provides nonexclusive criteria for evincing bad faith registration and use of a domain name. Paragraph 4(c) of the Policy provides nonexclusive criteria for demonstrating a registrantís rights or legitimate interests in a domain name.
A. Identity or Confusing Similarity of Respondentís Domain Name and Complainantís Trademark
Complainant has established through its federal registrations and through its periods of use that it has trademark rights in the mark SEVENTEEN, for use in both a monthly (traditional paper) magazine and for an on-line computer magazine.
Complainant has further established that the disputed domain names "seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagizine.com" are confusingly similar to Complainantís trademark. The first nine letters of each of the disputed domain names are identical to those of Complainantís mark. The remaining letters are merely descriptive of Complainantís product. An Internet user wishing to visit Complainantís website may well type in "seventeen-mag.com" or "seventeen-magazine.com", believing that such domain names would enable the user to visit Complainantís site. An Internet user, especially a younger one, could easily misspell the word "magazine" and accidentally type in "seventeenmagizine.com". Indeed, the disputed domain names gain their very importance and apparent value by reason of their confusing similarity to Complainantís mark. 2
Thus, the Panel finds for Complainant on the first element, that Respondentís domain names are identical or confusingly similar to a mark in which Complainant has rights.
B. Respondentís Rights or Legitimate Interests in the Domain Names
The Panel considers the nonexclusive list of circumstances found in paragraph 4(c) of the Policy to determine whether Respondent has rights to or legitimate interests in any of the disputed domain names. Since Respondent failed to respond to the Complaint, the Panel makes its determination based only upon its own inferences and Complainantís allegations and evidence.
The Panel finds that Respondent has no rights or legitimate interests in any of the disputed domain names. The Panel is unaware of any evidence showing Respondentís use of the disputed domain names, or any names corresponding to the domain names, in connection with any bona fide offering of goods or services. See Policy, paragraph 4(c)(i). There is no evidence that Respondent or Respondentís business(es) have ever been commonly known by any of the disputed domain names. See Policy, paragraph 4(c)(ii). There is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy, paragraph 4(c)(iii).
Rather, there has been presented overwhelming evidence that the opposite is true. The Panel accepts Complainantís contention that Respondent owns no trademark or service mark registration that is in any way related to Complainantís SEVENTEEN mark or to the disputed domain names. Respondentís personal name has nothing to do with either the SEVENTEEN mark or the disputed domain names. Respondent is not a licensee of Complainantís mark rights.
The Panel finds that Respondentís "mousetrapping" practice, in which Internet users are annoyingly subjected to unrelated and unwanted pop-up windows, is not a bona fide offering of goods or services. Rather, the Panel finds that this practice is an obviously commercial use intended to financially benefit Respondent by misleadingly diverting Internet consumers.
Thus, Panel finds for Complainant on the second element, that Respondent has no rights or legitimate interests in the disputed domain names.
C. Respondentís Registration and Use of the Domain Name
The Panel first considers the nonexclusive list of circumstances found in paragraph 4(b) of the Policy to determine whether the Respondent registered and used the disputed domain names in bad faith. The Panel finds the fourth circumstance of the Policy to be dispositive, and concludes from the evidence submitted that Respondent registered and used all three of the disputed domain names in bad faith. See Policy, paragraph 4(b)(iv).
The fourth circumstance, paragraph 4(b)(iv) of the Policy, provides that evidence of bad faith may be found when a domain name registrant "intentionally attempt[s] to attract, for commercial gain, Internet users to [the registrantís] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the registrantís] website or location . . . ."
There can be little question that Respondent is using the disputed domain names to intentionally attract Internet users to certain advertiserís on-line locations, for Respondentís own commercial gain. Likewise, the Panel concludes that the similarity between Respondentís domain names and Complainantís mark is likely to create confusion as to source, sponsorship, affiliation or endorsement among Internet users. Each of the disputed domain names "seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagazine.com" was clearly chosen to take advantage of the propensity of Internet users to add product descriptors (such as the word "magazine") to well-known marks when looking for the mark holderís corresponding website. The domain name "seventeenmagizine.com" was also chosen to take advantage of the propensity of users to misspell domain names. Respondent does nothing to dispel the confusion he purposefully initiates. Rather, Respondent compounds confusion by subjecting unfortunate web visitors to a frustrating array of pop-up window advertisements.
The Panelís conclusion of Respondentís bad faith in this matter is only reinforced by the overwhelming evidence presented that Respondent has engaged in a pattern of abusive domain name registrations and uses. In addition to the ICANN arbitration matters cited by Complainant, the Panel is aware that Respondent has more recently been found in other arbitrations to have registered domain names in bad faith. E.g., Yahoo, Inc. v. Zuccarini, WIPO Arbitration and Mediation Ctr., Case No. D2000-0777 (October 20, 2000); Cabelaís Inc. v. Zuccarini, National Arbitration Forum, File No. FA 0007000095233 (September 28, 2000); Dow Jones & Co., WIPO Arbitration and Mediation Ctr., Case No. D2000-0578 (August 28, 2000).
Furthermore, the Panel is aware that Respondentís conduct has recently been described by the United States District Court in the Shields litigation as "utterly parasitic and in complete bad faith." Shields v. Zuccarini, No. Civ.A. 00-94, 2000 WL 105884 (E.D. Pa. July 18, 2000) (entering judgment under the Anticybersquatting Consumer Protection Act and ordering Respondent to pay the mark holderís statutory damages and attorneysí fees).
The Panel is also aware that Respondent was recently ordered to pay a judgment of U.S. $500,000, plus attorneysí fees, in another legal proceeding in which Respondent engaged in similar Internet domain name registration and "mousetrapping" practices. Electronics Boutique Holdings Corp. v. Zuccarini, No.Civ.A 00-4055, 2000 WL 1622760, at *2, *8-9 (E.D. Pa. October 30, 2000) ("Mr. Zuccarini boldly thumbs his nose at the rulings of this court and the laws of [the United States].")
The Panel finds that Respondent registered and used of all three of the disputed domain names in bad faith. Thus, Panel finds for Complainant on the third element.
For the foregoing reasons, the Panel decides:
1. That the "seventeen-mag.com", "seventeen-magazine.com" and seventeenmagizine.com" domain names registered by Respondent are identical or confusingly similar to a trademark in which Complainant has rights;
2. That Respondent has no rights or legitimate interests with respect to the "seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagizine.com" domain names; and
3. That Respondentís "seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagizine.com" domain names have been registered and used in bad faith.
Accordingly, pursuant to paragraph 4 of the ICANN Policy, the Panel requires that the registrations for the domain names "seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagizine.com" be transferred to Complainant.
Dated: November 20,2000
1. The Complaint lists as registrar Computer Service Langenbach GmbH, d/b/a "joker.com" ("CLS"). CORE is a non-profit membership association of domain name registrars, and CLS is a member of CORE that offers domain name registration services via CORE. See CORE website, at "http://corenic.org/about_core/about.htm".
2. The Panel notes that Respondent would likely be estopped from denying the confusingly similar nature of the disputed domain names. During Respondentís deposition and at the preliminary injunction hearing in the course of Respondentís Shields litigation, Respondent admitted that he had registered thousands of Internet domain names only because they were confusingly similar to othersí famous marks or personal names. See Shields v. Zuccarini, No. Civ.A. 00-94, 2000 WL 1056400, at *3 (E.D. Pa. June 5, 2000).